Hill v Touchlight [2025] EWHC 107 (Pat)
Dr Hill was an expert in thermophilic proteins with a background in DNA cloning and vaccine technology. She conceived a method of making “doggybone DNA”, in which a specific enzyme – known as a “protelomerase” – was used to cut and close amplified DNA in a single step. Dr Hill further conceived that said process would have various advantages if it was a thermophilic process that used a thermophilic protelomerase.
Touchlight was a company set up to commercially exploit Dr Hill’s inventions. Dr Hill entered into a service agreement with Touchlight with effect from September 2008. It was a term of such agreement that Dr Hill would assign IPR relating to the “Projects” to Touchlight: the “Projects” were defined as “the projects based on thermophilic bacteria”.
Dr Hill resigned her position at Touchlight in 2009 and Touchlight subsequently obtained patent protection in respect of Dr Hill’s invention. The claims of the granted patents were not limited to a thermophilic process.
In these patent entitlement proceedings, Dr Hill claimed joint entitlement to the patents on the basis that she devised the patented invention before her employment at Touchlight commenced and that only the thermophilic aspects of the inventions were transferred to Touchlight under the service agreement.
The key issue at trial was the timing of Dr Hill’s invention, on which the Judge found against Dr Hill. In addition there were issues about the correct construction of the service agreement, estoppel, limitation, unjust enrichment and circuity of actions.
Hugo Cuddigan KC and Kathryn Pickard represented Dr Hill.